Eastman Kodak has a buyer -- or better said, buyers -- for its coveted treasure trove of digital imaging patents.
Under the agreements announced today, Kodak is selling the bundle for approximately $525 million, part of which will be paid by 12 intellectual property licensees organized by Intellectual Ventures and RPX Corp. Each licensee will receive rights to the patent portfolio and certain other Kodak patents. Another portion of the money will be paid by Intellectual Ventures, which is acquiring the digital imaging patent portfolio subject to these new licenses, as well as previously existing licenses, Kodak said.
The deal also includes an agreement to settle patent-related litigation between the participants and Kodak.
Kodak's imaging patents have been the object of desire among a host of technology giants that have been embroiled for months in various legal battles over intellectual property. The lust for patents even has companies being both partners and combatants at the same time, as in the case, for instance, of Apple and Google.
Sources familiar with the negotiations said Intellectual Ventures and RPX are representing a who's who of big tech and imaging companies, including Apple, Research In Motion, Google, Samsung, Adobe, HTC, Fujifilm, Facebook, Huawei, Amazon, Shutterfly, and Microsoft. The deal must still be approved by a bankruptcy court in January and would close 45 days after that.
It's not immediately clear how exactly these patents will be divvied up. In July, Kodak lost a patent battle against Apple and RIM over digital imaging technology. Kodak claimed in front of the U.S. International Trade Commission that it was owed more than $1 billion in the case, which had dragged on for nearly 30 months. The dispute was over a small portion of the 1,500 patents.
The combination of Intellectual Ventures and RPX is a surprising twist for people who track patents. Intellectual Ventures is one of the largest so-called non-practicing entities (NPEs) that have emerged over the last decade. Founded by former Microsoft executive Nathan Myhrvold, the firm says it controls more than 40,000 patents or other piece of intellectual property. What it doesn't actually do is build products. Instead, if researchers are nearing a point where they believe they can build a product, they spin it out into a separate company.
Not surprisingly, Intellectual Ventures, based in Bellevue, Wash., has become one of the most controversial companies in tech. It acquires patent portfolios from big and small inventors and files its own patents through a research arm. (Read our profile of Intellectual Ventures.) While Intellectual Ventures is directly involved in only a handful of patent suits, the main criticism of the company is its opaqueness. Critics believe it uses shell companies that license patents away from the main company and that those shell companies are used to demand licensing fees or to file suit against potential defendants.
Intellectual Ventures said in a statement: "Kodak's patents are fundamental to digital imaging technologies and this transaction is another example of the business value of patent rights. No single company could have completed this deal and by creating a consortium we were able to ensure that members get access to these important invention rights. The patent marketplace is very active, and IV expects to be involved in more complex transactions like this in the future."
RPX is a lesser known, publicly traded company based in San Francisco. It describes itself as a neutral clearinghouse for patents. Founded in 2008, it has a 125 employees and promises to be as open as possible about its patent portfolio. Companies join RPX based on a subscription rate pegged to a company's operating income. It pledges not to assert or litigate against the patents in its portfolio. It also sells insurance against patent litigation.
"We're going to start by being transparent," RPX CEO John Amster said in a recent interview with CNET. "We started with this clearinghouse service, but the goal is to create a market...Confidentiality? Throw it out the window."
RPX said in a statement that it had "acted as an advisor" in the transaction. "After a lengthy process, the highest valuation for the seller was achieved by the formation of a broad consortium of companies who will share in the patent rights to be granted," the statement said. "This transaction validates RPX's view that consortium-based patent acquisitions represent the most economically efficient manner of transacting patent rights."
Kodak has been working through bankruptcy proceedings during 2012, having filed for Chapter 11 protection in January. A stipulation of the $950 million loan it received from Citigroup to stay in business required it to sell off some of its intellectual property.
"This monetization of patents is another major milestone toward successful emergence" from the restructuring, Antonio M. Perez, Kodak's chairman and CEO, said in a statement. "This proposed transaction enables Kodak to repay a substantial amount of our initial DIP loan, satisfy a key condition for our new financing facility, and position our Commercial Imaging business for further growth and success."
At $525 million, the purchase is modest compared with the $4.5 billion that Nortel fetched in June 2011 for the intellectual property it sold off in its own bankruptcy proceedings. The buyers in that case were a consortium that included Apple, Microsoft, RIM, and Sony.
Editors' note: This story was updated throughout the morning with background and additional reporting.